CAFC Affirms TTAB: DC and Houston Seals Properly Refused Registration Under Section 2(b)
In a combined and precedential opinion, the U.S. Court of Appeals for the Federal Circuit (CAFC) has affirmed the TTAB's decisions (here and here) upholding the USPTO's Section 2(b) refusals to register the governmental seals of the District of Columbia and the City of Houston. In re City of Houston and In re The Government of the District of Columbia, 108 USPQ2d 1226 (Fed. Cir. 2013) [precedential]). (Opinion here).
Section 2(b) prohibits an "applicant" from registering a mark that "consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof." These two cases raised a question of first impression: whether a local government entity may obtain a federal trademark registration for its official insignia.
Houston: The City of Houston argued that because it was seeking to register its own seal, it was not an "applicant" and Section 2(b) prohibition was inapplicable. Section 45 defines "applicant" to include "juristic person," including any "organization capable of suing and being sued." However, the introductory sentence of Section 45 states that the definitions apply "unless the contrary is plainly apparent from the context." Houston contended that the context of Section 2(b) suggests that Congress did not mean "applicant" to include a government entity seeking to register its own seal.
The CAFC noted that there is a "strong presumption that the plain language of the statute expresses congressional intent [which] is rebutted only in rare and exceptional circumstances." United States v. Clintwood Elkhorn Mining Co., 553 U.S. 1, 11 (2008). It found nothing in the "plain language" of the statute that suggests an exemption for a governmental entity like Houston.
Moreover, the definitions of Section 45 solidified the CAFC's conclusion. A governmental entity like Houston is clearly an "organization capable of suing and being sued in a court of law," and it therefore fall squarely with the definition of "applicant."
The neighboring sections of Section 2(b) demonstrate that the drafters of the Lanham Act knew how to provide exceptions to the section's prohibitions. Therefore, the CAFC was "reluctant to add a silent exception to Section 2(b)" that would allow Houston to escape that section's ban.
Finally, the court observed that if Houston wants a rewriting of Section 2(b), it should take the matter up with Congress; the CAFC is not a proper forum for rewriting Congressional acts.
District of Columbia: The District took a very different approach, asserting that to deny it registration for its seal would violate the obligations of the United States under the Paris Convention. It contended that the meaning of Section 2(b) is not clear, but is ambiguous on this point. This issue of ambiguity was relevant to whether the legislative history of the Lanham Act and the Paris Convention may properly be considered.
The court, however, found no ambiguity in Section 2(b). Although it would be proper to consider the legislative context vis-a-vis the Paris Convention and the Lanham Act, it would not be proper to consider the "legislative history" - e.g., the statements of legislators regarding the statute.
The court concluded that, even assuming the Lanham Act was intended to implement the obligations of the Paris Convention, there was nothing in either the text or the context thereof to suggest any support for the District's position.
Article 6quinquies of the Paris Convention states that "[e]very trademark duly registered in the country of origin shall be accepted for filing and protected as in the other countries of the Union, subject to the reservations indicated in this article." However, the District of Columbia is a municipality of the United States, and not one of the "countries of the Union." Moreover, the District's seal is not "duly registered in the country of origin." In fact, the very question at hand is whether the District's seal is eligible for registration.
Therefore, the refusal to register the District's seal under Section 2(b) does not implicate the treaty obligations of the United States under the Paris Convention, and the Board was correct in upholding the refusal.
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TTABlog note: If you listened to the oral arguments at the CAFC [TTABlogged here], you would not be the least surprised by the court's ruling.
Text Copyright John L. Welch 2013.